Patent Prosecution Update
November 2016
A Privileged Place for Patent Agents
Should client communications with U.S. patent agents have the same protection against discovery afforded to communications with attorneys? That was the question recently addressed by the Federal Circuit on a writ of mandamus from the Eastern District of Texas. In re Queen’s Univ. at Kingston, No. 2015-145 (Fed. Cir. Mar. 7, 2016). Pointing to the inconsistent treatment of patent agent communications in prior district court cases, and the legal nature of a patent agent’s work, the Federal Circuit held that communications with patent agents were indeed privileged, but only in the limited context of “obtaining legal advice on patentability and legal services in preparing a patent application.” Id. at 18. More
FairWarning or Fair Weather for Patentees?
Following Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), accused infringers have favored the tactic of filing an early motion to dismiss. The perceived effectiveness of these motions, coupled with their potential to nip a litigation in the bud, propelled their use. This trend met resistance in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) and McRO, Inc. v. Bandai Namco Games America, Inc., No. 2015-1080 (Fed. Cir. Sept. 13, 2016), where claims survived early dispositive motions. But in the recent case FairWarning IP, LLC v. Iatric Systems, Inc., No. 2015-1985 (Fed. Cir. Oct. 11, 2016), the Federal Circuit affirmed the early invalidation of claims under Alice. This further refinement of patent-eligibility jurisprudence is important for all patent attorneys, both prosecutors and litigators. More
A Privileged Place for Patent Agents
Should client communications with U.S. patent agents have the same protection against discovery afforded to communications with attorneys? That was the question recently addressed by the Federal Circuit on a writ of mandamus from the Eastern District of Texas. In re Queen’s Univ. at Kingston, No. 2015-145 (Fed. Cir. Mar. 7, 2016). Pointing to the inconsistent treatment of patent agent communications in prior district court cases, and the legal nature of a patent agent’s work, the Federal Circuit held that communications with patent agents were indeed privileged, but only in the limited context of “obtaining legal advice on patentability and legal services in preparing a patent application.” Id. at 18. More
FairWarning or Fair Weather for Patentees?
Following Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), accused infringers have favored the tactic of filing an early motion to dismiss. The perceived effectiveness of these motions, coupled with their potential to nip a litigation in the bud, propelled their use. This trend met resistance in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) and McRO, Inc. v. Bandai Namco Games America, Inc., No. 2015-1080 (Fed. Cir. Sept. 13, 2016), where claims survived early dispositive motions. But in the recent case FairWarning IP, LLC v. Iatric Systems, Inc., No. 2015-1985 (Fed. Cir. Oct. 11, 2016), the Federal Circuit affirmed the early invalidation of claims under Alice. This further refinement of patent-eligibility jurisprudence is important for all patent attorneys, both prosecutors and litigators. More
| Follow us on |  |
 |
 |
DISCLAIMER: The information contained herein is intended to convey general information only and should not be construed as a legal opinion or as legal advice. The firm disclaims liability for any errors or omissions and readers should not take any action that relies upon the information contained in this newsletter. You should consult your own lawyer concerning your own situation and any specific legal questions. This promotional newsletter does not establish any form of attorney-client relationship with our firm or with any of our attorneys.
If you have any questions or need additional information, please contact:
Eric P. Raciti, Editor-in-Chief
J. Derek McCorquindale, Associate Editor
Clara N. Jiménez, Associate Editor
Eric P. Raciti, Editor-in-Chief
J. Derek McCorquindale, Associate Editor
Clara N. Jiménez, Associate Editor
Finnegan publishes newsletters, blogs, and IP Updates that provide news, statistics, and analysis of recent court decisions. Our newsletters and blogs focus on Federal Circuit practice, PTAB practice, trademark and copyright law, patent prosecution and counseling, and IP licensing. To sign up to receive newsletters, blog posts, or IP Updates, please click here.
Atlanta ▪ Boston ▪ London ▪ Palo Alto ▪ Reston ▪ Seoul ▪ Shanghai ▪ Taipei ▪ Tokyo ▪ Washington, DC
www.finnegan.com
Copyright © 2016 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP | All rights reserved